United States: Can I Patent And Market My Invention?

Once you have an idea for a new invention you may ask yourself
whether your invention is patentable and whether you can
commercialize your invention.

While there is no surefire way to know if your invention is
patentable before filing a patent application, there are measures
you can take that will give you a better idea about the
patentability of your invention and provide you some guidance
regarding whether you can market your invention without running
afoul of a third party’s rights.

Is my invention patentable?

In the United States, there are three types of patents: utility,
design, and plant. The type of patent generally associated
with "patents" is the utility patent, which is also and
the type granted most frequently. The United States Patent and
Trademark Office (“USPTO”) defines patentable subject
matter as any "new and useful" process, machine, article
of manufacture or composition of matter. In order to obtain a
patent, the invention must be determined by the USPTO to be new,
not obvious in view of existing technology and useful.1
One way of determining whether your invention may be new or not
obvious is to conduct a patentability search. A patentability
search allows you to investigate whether your invention may be
patentable by searching relevant prior art, that is, information
indicating that your invention is already known.

Almost ten (10) years ago, prior art searching by patent
practitioners generally included reviewing the USPTO website and
some Internet searching, but not necessarily with the expectation
of discovering useful information on the Internet. Now, Internet
searching is a very important aspect of a prior art search strategy
often providing relevant prior art that may ultimately impact the
patent strategy.

The volume of information on the Internet increases every day.
Much of the information that may be pertinent to a patent search
strategy is now available from various sources and is often
credible. The Manual of Patent Examining Procedure
("MPEP") § 2128 used by the USPTO examiners states,
"[p]rior art disclosures on the Internet or on an online
database are considered to be publicly available as of the date the
item was publicly posted. Absent evidence of the date that the
disclosure was publicly posted, if the publication itself does not
include a publication date (or retrieval date), it cannot be relied
upon as prior art."

A time-efficient and cost-effective patentability search
typically focuses on US patents and patent applications as well as
relevant information on the Internet as this is the information
that patent examiners typically search. However, patent examiners
have access to numerous databases and may locate references not
found in a patentability search. Nonetheless, a patentability
search whether performed by you, a patent practitioner (patent
attorney or patent agent) or a professional search entity can help
provide an indication of the patentability of your invention.
Moreover, the results of a patentability search may assist your
patent practitioner with the preparation of a patent application
(if you decide to proceed) by helping to identify novel features of
the invention.

Can I market my invention?

A US patent provides the patent holder the right, for a limited
time, to exclude others from making, using, offering to sell,
selling, or importing into the US the patented subject matter
without the patent holder’s permission. As discussed
above, a patentability search involves a review of prior art in an
effort to assess the novelty and nonobviousness of the
invention. A patentability search does not address
infringement. While it is possible that you may have a
patentable invention, you may not be free to practice your own
invention. If you are concerned about possible infringement,
you may consider a clearance search also known as a
freedom-to-operate (FTO) search and possibly a non-infringement
analysis.

Where a patentability search involves an analysis of patents,
patent applications, publications, information that can be found on
the Internet, etc., clearance searches are limited to patents, and
in particular, focus should be directed to patents that have not
expired. However, there may be instances where published
applications may be considered where the patent application is of
particular interest and issuance appears imminent.

A clearance opinion is based upon a clearance search and is an
opinion as to whether a product or certain activity may infringe
any identified valid and enforceable patents. Clearance
opinions are based upon the territory where you wish to make, use
or sell your invention and are time sensitive. That is, a
clearance search and opinion are relevant for certain jurisdictions
and can become stale as new patents issue, for example, the USPTO
issues new patents every Tuesday.

It is the claims of the patent that are considered for a
clearance analysis. Such an analysis typically begins with a
comparison of the elements of the independent claims with the
elements of your invention. If the exact elements of the
claims of the patent are met, this constitutes literal
infringement. However, even if literal infringement is not found,
there is a risk of infringement under the Doctrine of Equivalents.
The Supreme Court provided the following guidance regarding
equivalency under the Doctrine of Equivalents by stating,
“[i]f two devices do the same work in substantially the same
way, and accomplish substantially the same result, they are the
same, even though they differ in name, form, or shape." Thus,
a claim may be literally infringed or infringed under the Doctrine
of Equivalents. If a claim is found to be infringed, in order to
avoid liability, you must invalidate the claim or find a way to
work around the claim, i.e., a design around.

Further, even if it is determined that no claims of any patents
located during a clearance search are infringed, there is no
guarantee that you are “clear” to practice your
invention. As such, a clearance or freedom-to-operate opinion
does not actually provide clearance or the ability to operate
one’s invention freely. Nonetheless, such an opinion
can provide preliminary guidance as you decide whether to proceed
with pursuing your invention.

In some instances, at least one patent located during the
clearance search may be of particular interest. A
non-infringement opinion may be obtained in order to assess any
potential exposure associated with the patent(s) of interest.
In a non-infringement opinion, the patent attorney will consider
the claims of a specific patent. Additionally, the patent will also
be considered in view of the prosecution history of the patent in
order to provide a better understanding of the meaning of claim
terms and the possible interpretation of the same by a judge or
court of competent jurisdiction.

Historically, a non-infringement opinion could be asserted as a
defense against willful infringement to avoid treble damages. Now,
it is not necessary to obtain such an opinion, but non-infringement
opinions assist in showing the alleged infringer’s
“state of mind” during the time of the alleged
infringement if such an opinion is obtained before the alleged
infringing activity and may decrease the chances of being found to
have willfully infringed.

Conclusion

In summary, patent-related searches and opinions can be useful
resources in determining whether you should obtain patent
protection and/or commercialize your invention. Inventors should
conduct their own general patent search. Once it is confirmed that
you can’t find your invention using the Internet and other
databases or have identified what you believe to be the closest
prior art, consider continuing your efforts with a patent
practitioner. Internet searching generally does not replace prior
art searches performed by patent practitioners or professional
search entities. However, a few minutes to a couple of hours
spent by a patent practitioner using a search strategy including
specific or technical terms along with more common or lay terms may
save you time and money and complement a more detailed search and
patent strategy.

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